Fame, Property & Identity: The Purpose and Scope of the Right of Publicity Daniel Gervais & Martin L. HolmesARTICLE

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In addition to and independent of that right of privacy . . . a man has a right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made ‘in gross,’ i.e., without an accompanying transfer of a business or of anything else. Whether it be labelled a ‘property’ right is immaterial; for here, as often elsewhere, the tag ‘property’ simply symbolizes the fact that courts enforce a claim which has pecuniary worth. This right might be called a ‘right of publicity.’1

INTRODUCTION

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he right of publicity is not a trademark right. While the right of publicity often overlaps with rights granted by trademark law and other deception-based restrictions on the use of names and symbols,2 the right of publicity creates a more expansive right rooted in a variegated normative soil with elements of privacy, personhood, and property.3 This has a number of significant impacts. First, while consumer welfare is a key rationale for trademark law, it is an after-the-fact justification—not a compelling motivation— for the right of publicity. Second, an incentive to produce the object of the law’s protection—a musical composition protected by copyright, a new molecule protected by a pharmaceutical patent, or a quality brand protected by a trademark—can be offered as a rationale for the existence of most intellectual property rights. But is incentivizing the creation of a public persona or notoriety really the goal of the right of publicity? We think not.

The different rationales behind the right of publicity and trademark law matter. A trademark owner alleging trademark infringement must prove not that his rights in a particular trademark are affected—as would be the case in a copyright or patent context—but rather that the defendant’s use of a similar trademark is likely to cause confusion among relevant, reasonably prudent potential purchasers of the product or service related to the trademark.4 The right of publicity gives an individual something akin more to a property right in his name or likeness. It allows individuals to assert a right in their identity. It allows famous individuals to monetize their identity. As the Article explains, fame need not be lasting or even acquired deliberately to trigger the publicity right.

The right of publicity is in its infancy, and the right will be tested with new and evolving uses of individuals’ names and likenesses. Online uses, and use of celebrities in posts in social media are likely to escalate attempts to use the right to bar or restrict online speech. Particularly relevant to the development of the right of publicity is the impact that the digital age has on both a celebrity’s desire to maintain privacy and, conversely, opportunities for celebrities to monetize their likeness (and fame)—from Facebook pages and likes, to Tweets, and many other forms not yet in commercial use, such as projections of three-dimensional celebrity holograms.5 Because of shaky theoretical underpinnings, “judges . . . expand the content of persona [to avoid] creating arbitrary distinctions” between who may assert the right of publicity.6 This paper seeks to solidify those theoretical underpinnings.

The evolution of the right should be guided towards a right that neither overprotects nor underprotects the commercial use of one’s name or likeness. This crucial balancing act is arguably the target in all areas of intellectual property law. However, the object of protection in the right of publicity—a person’s name and likeness—seems the most “personal” of all forms of intellectual property law,7 leading to an intuitive notion that the right of publicity should grant powerful protections to individuals. Conversely, celebrities are also objects of social discourse. They fascinate us. Paparazzi hunt them for pictures taken while in public places but also in intimate settings.8 We must be allowed to speak about them, but up to what point?9

Protection granted by the right of privacy disposes of a number of arguments that the right of publicity is the sole protector of certain dignitary interests in one’s name and likeness. The expectation of privacy does not disappear just because someone is famous— though it may limit the scope of the reasonable expectation. Fame creates a distinct object of protection: the ability to use and monetize one’s likeness.10 When the likeness is directly associated with the sale or promotion of a commercial product or service, the law is fairly straightforward. Unfair competition law and other deceptionbased restrictions, such as the Lanham Act and false endorsement laws, protect against the use of one’s identity in a false, deceptive, or confusing way. In such cases, the goal is to protect members of the public against the deception of purchasing a good or service they believe to be endorsed by a celebrity.11 The domain that remains for the right of publicity to protect exclusively is revealing: the right of publicity alone protects the commercial use of nondeceptive, non-private references to an individual. The questions that emerge are: who benefits from this and why?

The thesis of this Article is that the right of publicity exists to protect rights in an individual’s identity, not for the benefit of consumers. Those rights should die with the individual (or very shortly thereafter), extend only to the name and likeness of the individual, and must succumb to the First Amendment in certain contexts. First, this Article examines the genesis of the right of publicity and the manner in which certain courts have defined the boundaries of the right and how it differs from the right to privacy. Then, the Article turns to arguments for and against the right of publicity. Most importantly, it discusses the overlap between the right of publicity and trademark law and explicates the key normative differences between the two types of right. Next, the Article discusses the dangers of overprotection and underprotection in the context of the right of publicity, along with First Amendment limitations. Finally, the Article argues that the current breadth of the right of publicity is not supported by compelling motivations, and suggests limiting the scope of actionable identity to certain enumerated natural characteristics.

* Director, Vanderbilt University Intellectual Property Program; Editor-in-Chief, Journal of World Intellectual Property. The Authors are very grateful to Professors Tyler Ochoa and Marshall Leaffer for their suggestions on an earlier version of this Article and to the Editors for their excellent work on the manuscript.

This Article assumes, but does not argue or endorse, that the right of publicity is a form of protection of intangible property that broadly fits under the banner of intellectual property law.↩

See Richard J. Curry, Jr., Diana’s Law, Celebrity And The Paparazzi: The Continuing Search For A Solution, 18 J. Marshall J. Computer & Info. L. 945, 946 (2000) (“Celebrities and the media possess a unique relationship. Many celebrities skillfully use the media to market and advertise their movies, television shows, books, and records. They use the media to propel their careers and create a marketable celebrity image. Society is celebrity crazed and magazines, tabloids and other media forms such as Entertainment Tonight and Access Hollywood have combined to feed that craze. Our society’s hunger for celebrities has spawned the existence of photographers known as the paparazzi. Armed with zoom lenses, high-powered microphones, and the promise of huge cash rewards for an exclusive celebrity exposé, the paparazzi have become more intrusive and aggressive than ever in their pursuit of private celebrity information.”). ↩

In fact, one of the main arguments to justify an inquiry into the right of publicity was its direct impact on the value of the estates of famous people. See Larry Moore, Regulating Publicity: Does Elvis Want Privacy?, 5 DePaul-LCA J. Art & Ent. L. & Pol’y 1, 8 (1995) (“Thus, the debate concerning the nature of publicity is more than an academic argument among legal scholars. The manner in which this issue is resolved can, and will, have great economic impact on celebrities as well as their estates.”).↩

See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (The “evidence was sufficient to support the jury’s finding that consumers were likely to be misled by the commercial into believing that Waits endorsed SalsaRio Doritos.”); see also Allen v. Men’s World Outlet, 679 F. Supp. 360, 368–69 (S.D.N.Y. 1988) (likelihood of consumer confusion established where advertiser intentionally used a look-alike of well-known celebrity and where audience to whom commercial was directed intersected with celebrity’s audience).↩